OPPOSITION No B 2 713 587

Kalypso Media GmbH, Wilhelm Leuschner Strasse 11-13, 67547 Worms, Germany (opponent), represented by Boehmert & Boehmert  Anwaltspartnerschaft Mbb – Patentanwälte Rechtsanwälte, Kurfürstendamm 185, 10707 Berlin, Germany (professional representative)

a g a i n s t

Plarium LLC, 1013 Centre Rd., Suite 403S, Wilmington DE 19805, United States of America (holder), represented by Jones Day, 2, Rue Saint Florentin, 75001 Paris, France (professional representative)

On 14/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 713 587 is upheld for all the contested goods and services.

2.        International registration No 1 296 210 is entirely refused protection in respect of the European Union.

3.        The holder bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods and services of International registration designating the European Union No 1 296 210, for the word mark ‘VIKINGS: WAR OF CLANS’. The opposition is based on European Union trade mark registration No 14 051 429, for the word mark ‘VIKINGS: Wolves of Midgard’.

The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods and services

The goods and services on which the opposition is based are the following:

Class 9: Computer software and computer programs for data processing, in particular computer game software, software for conducting of games; Downloadable electronic game programs; Electronic and machine-readable data carriers; all of the aforesaid goods not relating to a river or ocean cruise ship or a river or ocean cruise ship line. 

Class 28: Games, including games for amusement arcades and electronic games and coin-operated games; Card games; Toys; Toy figurines; Models being toys; all of the aforesaid goods not relating to a river or ocean cruise ship or a river or ocean cruise ship line. 

Class 41: Provision of on-line computer games and Electronic publication services; Games on the Internet; Providing information on-line relating to computer games and computer enhancements for games; Publication of printed matter, texts and online publications; Layout services (other than for advertising purposes); Production of animation; Providing of non-downloadable online videos and digital music via the internet; all of the aforesaid services not relating to a river or ocean cruise ship or a river or ocean cruise ship line.

The contested goods and services are the following:

Class 9: Computer game software for use on mobile and cellular phones; computer application software for mobile phones, portable media players, tablets, handheld computers and other electronic mobile devices, namely, software for video and computer games; downloadable computer game programs.

Class 41: Entertainment services, namely, providing on-line computer games.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The terms ‘in particular’ and ‘including’, used in the opponent´s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, is used in the holder’s list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.

Contested goods in Class 9

The contested Computer game software for use on mobile and cellular phones; computer application software for mobile phones, portable media players, tablets, handheld computers and other electronic mobile devices, namely, software for video and computer games fall within the opponent´s broad category of Computer software and computer programs for data processing, in particular computer game software. They are therefore identical.

The contested downloadable computer game programs are identical to the opponent´s downloadable electronic game programs, since the same goods are referred to by using synonym expressions.

In regard to these contested goods the holder found that at most they would be similar given that they differ in their function and destination. However the Opposition Division does not concur. Indeed, as established, the contested goods are either wholly included in those of the opponent’s or they are synonyms. The Opposition Division does not follow the limited reasoning provided by the applicant which are essentially statements not backed up by any evidence or clear reasoning. Thus the established identity is maintained.

Contested services in Class 41

The contested Entertainment services, namely, providing on-line computer games are identical to the opponent´s Provision of on-line computer games.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

The holder argued that the public to which the goods and services are addressed is formed by the general public and professionals. It argues that the consumers of these goods and services are highly educated individuals, with a good knowledge of the game industry and related products. It also argued that the attention paid by them during the purchase of the goods and services involved is deemed to be much higher than average.

These goods and services are directed at the public at large. Regarding the degree of attention paid during their purchase, the Opposition Division finds that though the goods and services are easy to obtain, prices may vary and, in the event that the price was not cheap, the degree of attention may well be higher than average. Consequently the degree of attention may vary between average and above.

3. The signs

VIKINGS: Wolves of Midgard	VIKINGS: WAR OF CLANS
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The text in the marks is in English and, since the meaning of the terms is relevant in the present proceedings, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

It is important to note that the signs compared share the same sequence of elements, which (from left to right) consists of the word ‘VIKINGS’ followed by a colon ‘:’, and followed by a three-word sentence with the same grammatical structure in both signs (i.e. a word, followed by the term ‘of’ and another word).

The word ‘VIKINGS’ in the marks is the plural form of ‘VIKING’. It is used in English to refer to the men who sailed from Scandinavia and attacked villages in most parts of north-western Europe from the 8th to the 11th centuries.

The word VIKINGS is followed in both signs by a colon ‘:’, which is a punctuation mark used to introduce an explanation or an enumeration. In this case, it introduces the sentence ‘Wolves of Midgard’ in the earlier mark and ‘WAR OF CLANS’ in the contested sign.  

The word ‘of’ in both marks is an English preposition. It is used after some verbs, nouns, and adjectives in order to introduce extra information (See Collins English Dictionary)

The sentence ‘Wolves of Midgard’ in the earlier mark is an English sentence that refers to a kind of wild animal (‘wolves’ is the plural for of ‘wolf’) from a place named ‘Midgard’. The word ‘Midgard’ is the anglicised form of the word from Old Norse (a North Germanic language spoken by inhabitants of Scandinavia during the VIII to XIII centuries). It was used as one of the names for ‘Earth’. Since this word is not used nowadays, it is likely that a significant part of the public ignores the concept referred to before, and perceives it, within this context, as the name of a place or geographical region, since it is used in the sentence to indicate the place the wolves are from.

The sentence ‘WAR OF CLANS’ in the contested sign refers to a period of fighting or conflict (i.e. ‘war’) between groups of people interrelated by ancestry or marriage, and/or with the same leader (‘clans’).

The holder argues that it consists of a reference to the content of the games, and it is therefore a non-distinctive term.

The Opposition Division considers that, in relation to the goods in Class 9, the word ‘VIKINGS’ can be seen as information about the theme of the games (i.e. their content). In relation to the services involved, they can also be seen as information about the themes of the games in relation to which the services are offered. Therefore, the word ‘VIKINGS’ is in both signs of lower than average distinctive character in relation to the goods and services involved.

This same reasoning would lead to a lower than average degree of distinctive character for the sentences ‘WAR OF CLANS’ and ‘Wolves of Midgard’ in the signs, since they also be seen as information about the theme of the games. Therefore, despite a lower than average degree of distinctiveness for the elements forming the marks, the signs do not have elements more distinctive than others.

As argued by the opponent, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. In this case, the initial part of the signs is the same word ‘VIKINGS’ followed by a colon ‘:’. It is therefore relevant that the coincidences are found in the parts of the sign that first catch the attention of the reader.

Visually, the marks are word marks, and therefore the word as such is protected and not its written form. It is irrelevant whether word marks are represented in small or capital letters.

The signs coincide (from left to right) in their first word and punctuation mark ‘VIKINGS :’, and in the structure of the sentences following those common elements, namely ‘Wolves of Midgard’ and ‘WAR OF CLANS’, being the structure formed by a word, followed by the term ‘of’ and another word.

The signs differ in the words ‘Wolves’ and ‘Midgard’ of the earlier mark and ‘WAR’ and ‘CLANS’ of the contested mark.

According to the above, since all of the elements in the marks of the same degree of distinctive character, and being the coincidences found at the beginning of the marks (i.e. the parts that first catch the attention of the reader) it is considered that the signs are visually similar to average degree.

The visual comparison of the signs carried out by the holder was done in relation to two figurative signs, claiming that they are in fact the real ways in which the confronted marks would be used in the market. However, the Opposition Division notes that said representations are irrelevant, since the comparison of signs and the complete analysis must be carried out in relation to the contested sign as applied for and the earlier mark as registered. Therefore, the holder´s claim must be set aside.

Aurally, the pronunciation of the signs coincides in the sound of the letters
‘v-i-k-i-n-g-s’ and ‘of’, present identically in both signs, in the same positions. Both signs contain the colon ‘:’ following the word ‘VIKINGS’. This punctuation mark is not pronounced in any way, but it creates a pause between the elements preceding and following it, that will occur in both marks.

The signs differ in the sound of the words ‘Wolves’ and ‘Midgard’ of the earlier mark and ‘WAR’ and ‘CLANS’ of the contested mark.

According to the above, and being all of the elements in the marks of the same degree of distinctive character, it is considered that the signs are visually similar to average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs will be perceived as referring to the concept of ‘VIKINGS’, and differ in the concepts of the sentences ‘Wolves of Midgard’ and ‘WAR OF CLANS’.

According to the above, and being all of the elements in the marks of the same degree of distinctive character, the signs are conceptually similar to an average degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as slightly lower than average for all the goods and services in question.

5. Global assessment, other arguments and conclusion

The goods and services compared in section a) above are identical.

As noted above, the earlier mark has a slightly lower than average distinctive character. However, the signs compared are visually, aurally and conceptually similar to an average degree, and neither have no elements more distinctive than others.

They contain their main coincidences at their beginnings, ‘VIKINGS:’, namely the parts of the signs where consumer´s attention is focused on the first place. As explained in section c) above, the signs compared share the same sequence of elements which, from left to right, is the word ‘VIKINGS’ followed by a colon ‘:’, and by a sentence with the same grammatical structure in both signs (i.e. a word, followed by the term ‘of’ and by another word).

These goods and services are directed at the public at large. The degree of attention may vary between average and above.

For the part of the public paying an average degree of attention during the purchase, it must be noted that, according to the principle of imperfect recollection, the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind.

Also having regard to the principle of interdependence, it is considered that the coincidences between the signs, together with the identity of the goods and services involved, are enough to outweigh their dissimilarities, and may induce at least part of the public to believe that the conflicting goods and services come from the same or economically-liked undertakings.

Furthermore, it is common practice in the relevant market for manufacturers to make variations to their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements, in order to denote new product lines or to endow a trade mark with a new, fashionable, image. In the present case, although the public in the relevant territory might detect certain differences between the signs, the likelihood that it might associate the signs with each other is very real. Due to the coincidences referred to above, the same beginning and the common grammatical structure, it is conceivable that the relevant public will regard the goods and services designated by the conflicting signs as belonging to two ranges of goods and services, coming from the same undertaking.

The holder argues that a high degree of attention will be paid by consumers during the purchase of the goods and services involved. It states that they are directed at both professionals and the public at large, as far as they are older than 17 years-old, due to the violent content of the games.

As stated above, the Opposition Decision considers that the degree of attention may vary between average and above.

In relation to the part of the public paying a higher than average degree of attention, and independently of their age, it must be noted that also these consumers need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54). Therefore, the Opposition Division considers that, taking into account the coincidences between the marks, and the identity of the goods and services, the conclusion reached above regarding the existence of likelihood of confusion or association would be maintained, despite a high degree of attention paid by these particular consumers, or their age.

The holder also argues that the common element ‘VIKINGS’ of the signs is generic and non-distinctive, due to the fact that there are many trade marks including that word, in relation to the same kind of goods, being very common in the game industry. In support of its argument the holder submits some documents, such as a google extract with the search results for ‘Best Vikings games’, and several website extracts showing video games with Viking-related themes.

The Opposition Division notes that said results do not demonstrate that consumers have been exposed to a widespread use of, or have become accustomed to, using the word ‘VIKINGS’ in relation to video games, and that as a consequence this word has become generic and/or void of distinctive character for this kind of goods. Under these circumstances, the holder’s claims must be set aside, and the word ‘VIKINGS’ is not considered to be generic in relation to the goods and services involved.

Considering all the above, there is a likelihood of confusion on the part of the public.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 14 051 429. It follows that the contested trade mark must be rejected for all the contested goods and services.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the holder is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Vanessa PAGE

María del Carmen SUCH SANCHEZ

Richard BIANCHI

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.